Simple Trademark Registration? Well, not really . . .

Another favorite of mine are the ads proclaiming "Simple trademark registration" or "Easy trademark registration" or something to that effect. These ads paint a very rosy picture - but the truth is that trademark law is not simple, and many issues can come up during the course of a trademark search or prosecution of a trademark application. Occasionally, an application may turn out to be a simple affair. But generally, trade mark clearance, use, and applications for registration are serious endeavors that need to be treated as such.  And often they are the exact opposite of simple. Yes. That means complicated.  Of course, no one would advertise "complicated trademark registration." That would not be good for business. But the simple truth is that trademark use and registration generally are not simple.

False Advertising?

You see it sometimes - sponsored links or banner ads hawking low priced "trademark registration."  One I saw recently said "TRADEMARK REGISTRATION $99.00."  There is just one problem with these advertisements:  The only authorities in the U.S. that can register trademarks are the USPTO or the trademark registrars of the fifty states.  And they are not the ones who post these adverts.

A trademark "agent" or attorney may offer you trademark registration services for $99.00.  But they cannot register your trademark.  That's why, at least to me, it seems somewhat deceptive for an attorney or other service provider to post an advertisement that appears to indicate that they will provide you with a registered trademark for, e.g., $99.00.  No attorney or other service provider can guarantee that your trademark application will result in a successful registration. So you have to ask yourself whether an honest attorney or trademark "agent" would  hawk "low priced trademark registration."  Wouldn't the honest person  advertise "low priced trademark registration services" or "low priced trademark applications?" It's worth contemplating.

So remember - when you see the advertisement saying "Low Priced Trademark Registration" or - for example - "Trademark Registration $99.00" don't believe the hype! You're probably better off hiring a firm that doesn't use this type of come on.

How to Select the Right Trademark for Your Goods or Services

First of all, there is a right time to select the Right Trademark – the Right Time is when you are starting out – whether opening your new company or launching a new line of goods or services.  That is when you gain the greatest advantage by choosing the Right Trademark. 

The Right Trademark for your company must possess four very important characteristics:

• ·         it designates your company as the source of the product;
• ·         it conveys a positive message about the product;
• ·         it is a trademark that will not expose you to unnecessary litigation risk;
• ·         it is a trademark to which you can claim exclusive rights.

If your trademark embodies these four characteristics, there’s a very good chance it is the Right Trademark – one that will help you build your company and become a valuable asset – maybe even your company’s most valuable asset. 

                It is not easy to obtain ownership of the Right Trademark.  Any mark that does not fulfill all four of the necessary characteristic set forth above will fail to help you reach your goals.  That’s why it is extremely important, as you set out to build your business, to make sure you are using the Right Trademark.

                In order to obtain the Right Trademark it’s critical that you consult with a trademark attorney.  While your marketing department may be able to come up with a trademark that conveys a positive message about the product, chances are they are not qualified to determine whether a trademark is capable of designating your company as the source of the product, whether use of a given mark might expose you to unnecessary litigation risk or whether you would be able to successfully claim exclusive rights to a given trademark.  Remember - a trademark is only the Right Trademark if it’s a trademark to which you can claim exclusive rights!  To address these issues, you need a trademark attorney on your team.

                In my many years practicing trademark law, I have seen far too many instances of companies investing precious resources promoting goods or services under trademarks that are unenforceable because they are (a) already in use by other parties; (b) highly descriptive of the product; or (c) too similar to other party’s prior-used trademarks for related products.  These mistakes in trademark adoption can be avoided by consulting with an experienced trademark attorney at the right time – when you are starting your business or introducing a new line of goods or services.

                My firm provides trademark selection and clearance services to help you obtain a trademark that will satisfy all four of the requirements for the Right Trademark.  We can help you

• ·         select a trademark that designates the source of your product;
• ·         select a trademark that conveys a positive image about your product and company;
• ·         avoid selecting a trademark that may expose you to unnecessary litigation risk; and
• ·         select a trademark to which you can claim exclusive rights.

We accomplish this by working with you during the first phase of the trademark selection process – when you are evaluating proposed trademarks in terms of the message they convey about your product and whether they sound good / look good.  We will evaluate your proposed marks for issues related to their ability to serve as a trademark – in other words, whether the proposed mark may be too descriptive of your product, and other inherent issues related to registrability of the proposed mark.  Once an appropriate mark that meets the first two qualifications has been selected, we can assist with the critical second phase - the determination as to whether  the proposed mark might expose you to unnecessary litigation risk and whether you can claim exclusive rights to it. 

Please call us today to get started.

                Remember, there is a Right Time to obtain the Right Trademark – and that time is when you are starting out – opening a new business or introducing a new line of goods or services.

Trademark Owners -- Stop and Think BEFORE You Pay

If you have a new TM registration chances are you may receive some very *interesting* notices - via regular mail or email. Some of these notices may at first glance appear to be from a governmental agency, others may quote or attempt to paraphrase trademark law.  The type of communications I am referring to have one major thing in common - they all include instructions as to how much, where and how to send your money. 

You can see a listing from the USPTO of Non-USPTO solicitations that may resemble official USPTO communications here:  http://www.uspto.gov/trademarks/solicitation_warnings.jsp

One interesting solicitation I have been receiving recently via email is the following:

•  Trademark Owner's Digest   
  
  The solicitation from Trademark Owner's Digest looks like this:
  
  
  
  It begins with "Congratulations! Your Trademark has been registered."  This immediately sets alarm bells ringing in my head, as coming from new York, I am naturally suspicious of being congratulated by anyone for anything.  Of course, it is entirely possible that Trademark Owner's Digest provides a very valuable service in exchange for the $980.00. 
  
  Trademark owners should be careful in responding to ANY solicitations pertaining to their trademark applications or registrations.   Know what you are getting in return before you send your money!

Dealing with cease-desist letters (Part One)

Here's another fun hypothetical, trademark fans!*

Let's say you've been doing business for a few years selling scented candles and you own the registered mark "MOOD" for those goods.  You're feeling pretty good - in a pretty good mood - because your candle sales are going well.  Then, one day, IT COMES.  In a certified envelope from the U.S. postal service (and usually nowadays with a copy by email): the CEASE-DESIST LETTER!

You open the letter and read it, and are astonished to learn that a company located in (let's just say) France claims that they have prior rights to the MOOD trademark.  Already, you have the feeling that this letter is going to ruin your day.

Reading further, you learn that the French company "owns registrations for the MOOD mark in the United States and thirty five countries worldwide" and " through such extensive use of the mark has established invaluable good will in the mark" and further that your use of the mark "is likely to cause consumer confusion" and is in violation of various trademark laws.

Finally you get to the part where the writer of the letter, usually an attorney for the French company, demands you cease all use of your mark and otherwise comply with the demands set forth in this letter within ten days, or else they will have no choice but to advise their client to take such legal actions as may be necessary to protect their rights to the MOOD trademark.  

It sounds very bad.  But before you panic, there are a couple of things you want to look at.  First, do they mention in the letter what sort of products or services the French company sells under its MOOD mark?  If not, and the mark is not famous like Coca-Cola or McDonald's, this should tweak your antennae.  If they mentioned their trademark registration numbers, go to the USPTO web site and look at their trademark registrations.  Sometimes what you will find may surprise you.  For instance in this hypothetical, suppose you went to the USPTO site and found that the French company did in fact own several registrations for the trademark MOOD, but the goods identified in all of these registrations are specially designed nuts and bolts for use in submarines.  In that case it looks like you can go ahead and make a sandwich and get on with your day.  Because owning MOOD for nuts and bolts used in submarines would not (at least on the planet I live on) give you the right to prevent another entity from selling scented candles under the MOOD mark.  But before you tuck into that sandwich make a note to yourself to call your trademark attorney after lunch to have them review the cease-desist letter, research the claims and respond to the sender.  If their claims are weak or highly questionable, a strong response pointing out the weakness of their claims is usually enough to send them packing. 

Alternately, in the event that the French company owns the MOOD mark for aromatherapy products, which arguably are related goods to scented candles, your TM attorney will be able to advise you how best to proceed to minimize problems.

This is NOT legal advice, of course, and the writings on this blog are provided solely for the amusement of the readers.  Consult your attorney before taking or omitting to take any action (except you may breathe prior to consulting your attorney).





*Actually there are no trademark fans, but I just wanted to say that. There are however, certain types of fans that are sold under registered trademarks.  So that is pretty cool. 

Dealing with USPTO Office Action Letters - confusing extraneous information

So you filed a trademark application without using a lawyer (oops!) and now you've received an "office action" from the USPTO.  At first when you read it, it may sound like a bunch of boiler plate, and that's because it is - at least, a good part of it. 

There are certain bits of prose that seem to find their way into a good many office actions that are probably intended to assist the trademark applicant in formulating a response - but often these pearls from the USPTO can be downright confusing to the uninitiated. 

One of my favorites is when the office action requires an amendment to the identification of goods or services, because the original listing as filed included something that was arguably ambiguous.  The examining attorney will often helpfully include a suggested amended ID of goods/services that would be acceptable to the USPTO, but following that helpful suggestion there is often a bunch of mumbo- jumbo about requirements for adding classes of goods and services, including requirements for specimens and filing bases.  This may be appropriate where the examining attorney's suggested amended ID of goods would necessitate adding classes to the application, but where the suggested amended ID would not lead to the addition of another class of goods, this information cannot be anything but confusing.

The take-away:   Read your office action carefully, and don't let extraneous information boggle your mind.  And of course, your best bet may be to call a TM attorney to prepare and file the response on your behalf.  We spend a good portion of our lives reading these things!

Trademark THIS

As a trademark attorney, you hear a lot of interesting stories.  Some are more interesting than others.   But one thing I constantly hear from people is the word "trademark" used as a verb.  Some examples might be:
"I want to trademark my business name" or "Yes, but my competitor hasn't trademarked it."
When people say this, they invariably are using the word "trademark" as a shorthand way of saying "register the mark."  That's OK.  The problem is that many people are under the misconception that unless the mark has been registered, no rights have been established.  I want to clear up that little misconception right now.
You can own trademark rights in a word, phrase or image -- or even a sound or smell -- that you use to market your goods or services.  If you stamp your skateboards with the made-up word PHRUNG, then you are establishing trademark rights to PHRUNG by selling the skateboards that are so marked.  If you file an application with the USPTO to register PHRUNG for skateboards, you can fortify the rights you have already established by obtaining federal trademark registration. 
Suppose you had been selling your PHRUNG skateboards for a couple of years, mostly though an on-line store, but you had never filed an application to register PHRUNG with the USPTO.  Now suppose your arch-nemesis, who has never sold a skateboard, decided he wanted to own the PHRUNG name for skateboards, and after searching the records of the USPTO he discovers that you have not registered the mark.  Can your arch-nemesis now apply to register PHRUNG for skateboards and pre-empt you from selling PHRUNG skateboards?  NO!
As long as you know about your arch-nemesis' trademark application, you can oppose it on grounds of likelihood of confusion and priority based on your use of the PHRUNG mark on skateboards prior to the date he filed his trademark application.  Assuming you can prove that, it should be enough for his trademark application to be refused. 
Even if your arch-nemesis was able to get PHRUNG registered because you were not paying attention to trademark application filings at the USPTO, his ownership of a federal trademark registration would still be subject to whatever rights you had already established to the PHRUNG mark prior to the time he filed his trademark application.  If, prior to the filing date of your arch-nemesis' trademark application, you were selling PHRUNG skateboards nationwide, except say in Arizona, then your arch-nemesis, despite his ownership of a federal registration, would not have grounds to force you to stop using the PHRUNG mark for skateboards anywhere other than Arizona. 
Are we clear on this now?  You get your trademark rights from use.  You enhance your trademark rights by registration.
What about intent-to-use applications, you say?  We will have to save that discussion for another day.